Olson Zaltman & Associates LLC

Trademark Trial and Appeal BoardJan 13, 2011

No. 78866894 (T.T.A.B. Jan. 13, 2011)

Mailed: 1/13/11 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Olson Zaltman & Associates LLC ________ Serial No. 78866894 _______ David V. Radack of Eckert Seamans Cherin & Mellott for Olson Zaltman & Associates LLC. Kimberly Frye, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Quinn, Cataldo and Ritchie, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Olson Zaltman & Associates LLC filed, on April 21, 2006, an intent-to-use application to register the mark DEEP METAPHORS (in standard characters) for “marketing research services” (in International Class 35). Applicant subsequently filed a statement of use setting forth dates of first use anywhere and in commerce of 1997, accompanied by a specimen. The trademark examining attorney refused registration under Sections 1, 2, 3 and 45 of the Trademark Act, 15 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 78866894 2 U.S.C. §§1051-53 and §1127, on the ground that applicant’s mark, as shown on the specimen, fails to function as a service mark for applicant’s services. When the refusal to register was made final, applicant appealed. Applicant and the examining attorney filed briefs. Applicant’s specimen, described in the statement of use as “a promotional slide,” is reproduced below. Applicant contends that its specimen “is a PowerPoint handout/presentation that is used with clients to market” applicant’s services. (Brief, p. 2). Applicant argues that its mark Ser No. 78866894 3 identifies and distinguishes a unique feature of Applicant’s services, whereby Applicant’s consultants interview consumers to determine what they are really thinking. This research is offered to Applicant’s customers who use this information in forming marketing, promotion, and advertising campaigns. The use of Applicant’s mark, “DEEP METAPHORS,” is tied directly to Applicant’s marketing services, as indicated on the specimen of record, by the marketing services identified by each bullet point in the specimen. ***** The mark, as used on the specimens, indicates a source of marketing services to the general public. This is because several activities (indicated by the bullet points that being [sic] with gerunds, such as “uncovering,” “unearthing,” and “understanding”) speak to Applicant’s marketing services. Applicant’s use of “DEEP METAPHORS” in this context will indicate to the public a source of Applicant’s marketing services. (Brief, pp. 2-3). Applicant also points to its use of the “™” symbol which, applicant urges, indicates to the public that the term DEEP METAPHORS is a service mark indicating the source of its marketing services. The examining attorney maintains that the mark sought to be registered is merely included within a bullet point on a slide as the name given to a feature of a research objective. According to the examining attorney, “DEEP METAPHORS identifies only part of an element that is used Ser No. 78866894 4 to develop a ‘deep strategy,’ which presumably is a strategy to be used in marketing clients’ goods or services.” (Brief, p. 3). The examining attorney also discounts applicant’s use of the “™” designation. As has been frequently stated, “[b]efore there can be registration, there must be a trademark [or service mark].” In re Bose Corporation, d/b/a Interaudio Systems, 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1978). The starting point for our analysis is Section 45 of the Trademark Act, as amended, 15 U.S.C. §1127, where “service mark” is defined as “any word, name, symbol, or device, or any combination thereof used by a person...to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.” This section further provides that a mark shall be deemed to be in use in commerce on services when “it is used or displayed in the sale or advertising of services and the services are rendered in commerce.” Thus, the mark must be used in such a manner that it would readily be perceived as identifying the specified services and distinguishing a single source or origin for the services. In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006); and In re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992). The mere fact that a Ser No. 78866894 5 designation appears on the specimen, or that applicant intends the designation to be a source indicator, does not make it a trademark or service mark. In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992). A critical element in determining whether matter sought to be registered is a service mark is the impression the matter makes on the relevant public. Thus, in a case such as this, the critical inquiry is whether the asserted mark would be perceived as a source indicator. See In re Brass-Craft Mfg. Co., 49 USPQ2d 1849 (TTAB 1998); and In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998). To be a service mark, the designation must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin of the services. We determine whether this has been achieved by examining the specimen of use along with any other relevant material submitted by applicant during prosecution of the application. In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986). Here, applicant did not submit any additional evidence, and so we look solely to the specimen of use.1 1 Applicant invites the Board to visit its website (www.olsonzaltman.com) “for a better understanding of Applicant’s services.” (Brief, p. 2). The Board does not take judicial notice of websites. The proper procedure would have been for applicant to submit a copy of the relevant portions of the website during prosecution. Ser No. 78866894 6 The use by applicant does not show DEEP METAPHORS as a service mark. Not all words or symbols used in the sale of services function as service marks. To function as a service mark, a term must be used in a manner which projects to purchasers a source of the services. In re Morganroth, 208 USPQ 284 (TTAB 1980). In the present case, the term is barely noticeable as it is buried within the text of a single bullet point on a single PowerPoint slide about “Research Objectives.” Even assuming that consumers would carefully read the slide long enough to reach the reference to “Deep Metaphors,” they will read the following: “Unearthing the basic frames (Deep Metaphors™) activated by the underlying structure of thinking behind each topic.” Although, as applicant argues, the proposed mark may be used in connection with a “feature” of applicant’s services, DEEP METAPHORS would at best be perceived merely as the name of a concept or idea, and not as a service mark identifying the source of applicant’s marketing research services. The specimen fails to show the requisite “direct association between the offer of services and the mark sought to be registered therefor.” In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). Instead, the term merely identifies, in a very vague sense, a concept or idea and Ser No. 78866894 7 would be perceived only as such; the term would not be perceived as indicating the source of marketing research services. See In re Moody’s Investors Service Inc., 13 USPQ2d 2043, 2048 (TTAB 1989) (“Aaa” found to identify applicant’s ratings of fixed interest rate obligations, and not applicant’s ratings services). As to applicant’s use of the “™” designation immediately after DEEP METAPHORS, it is the perception of the relevant ordinary consumer that determines whether the asserted mark functions as a mark, not the applicant’s intent, hope or expectation that it does so. See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960). Thus, in the present case, applicant’s use of the “™” designation does not cause the term DEEP METAPHORS to be viewed as a service mark for its marketing research services. Based on the specimen of use, we conclude that applicant’s proposed mark, DEEP METAPHORS, fails to function as a service mark for marketing research services. Decision: The refusal to register is affirmed.